Craig A. Ash Oyen Wiggs Green & Mutala LLP E-mail: cash@patentable.com Tel: 604-669-3432

1. LAW 422 - INTELLECTUAL PROPERTY Craig A. Ash Oyen Wiggs Green & Mutala LLP E-mail: cash@patentable.com Tel: 604-669-3432

2. Course Materials Casebook Statutes: Consolidated Intellectual Property Statutes and Regulations (Carswell) Reference materials: -Fox on Canadian Law of Trade-Marks and Unfair Competition (4th. ed. 2002). -Robic-Leger (ed.), Canadian Trade-Marks Act Annotated (current). -Industry Canada, Trade Marks Examination Manual (current). -Trade-marks Law of Canada (1992), G.F. Henderson (ed.).

3. Introduction • Federal Statute - Trade-marks Act • Provincial corporations statutes deal with corporate names but do not give trademark protection to those names.

4. Introduction • Trademark rights are national. They must be separately protected in each country of interest. • Registration is national, not provincial. • In Canada, trademark rights accrue primarily through use, not registration. • Trademarks are used and registered for specific goods/services. The identical trademark can be owned by different parties for different products, e.g APPLE for computers or for recordings.

5. Introduction Kirkbi AG v. Ritvik Holdings K’s patents for a toy block configuration expire. R sells identical blocks under a different name. K asserts “Lego indicia” as a trademark. K’s claim for enforcement of such trademark by a passing-off action under Section 7(b) and at common law fails.

6. The Lego Indicia Trademark

7. …Kirkbi AG v. Ritvik • Registered vs. unregistered marks. • Trade-Marks Act as a national regulatory scheme for registered and unregistered trademarks. • Federal trade and commerce power: “general trade and commerce affecting Canada as a whole.” • Constitutionality of Trade-Marks Act and of Section 7(b). • Proper scope of trademarks vs. patents. • Doctrine of functionality. • “Unfair competition.” • Enforcement of unregistered trademarks by passing-off action under Section 7(b) and common law.

8. Introduction • Section 2 defines a trademark as: (a) a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others, (b) certification mark, (c) a distinguishing guise, or (d) a proposed trademark.

9. Distinctiveness A “mark” can be something that is just descriptive or decorative and not used for purpose of distinguishing. But that is not a “trademark.” • Section 2 defines “distinctive” in relation to a trademark as meaning: • “a trademark that actually distinguishes the wares or services in association with which it is used by its owner from the wares or services of others or is adapted so to distinguish them.”

10. Distinctiveness • Inherent distinctiveness and actual distinctiveness: • Inherent: continuum from highly distinctive to descriptive or generic. • EXXON…KODAK…APPLE…MICROSOFT…EXTRA…MCDONALDS…NYLON. • Actual distinctiveness: depends on inherent distinctiveness and the activities of the user and third parties.

11. Distinctiveness • Examples of trademarks that would not be distinctive: • Two unrelated companies use the same trademark for similar products. • Trademark is generally used to describe the product, e.g. NOTEBOOK for computers, FRENCH for wine. • Trademark is a generic term for the product, e.g. NYLON.

12. Distinctiveness • How does a foreign mark that is not used in Canada affect the distinctiveness of a Canadian mark? 1. Bojangles (application) 2. Philip Morris (post-registration)

13. Distinctiveness Bojangles Issue is the distinctiveness of a Canadian mark in the context of applying to register it. The foreign mark’s reputation in Canada must be “substantial,” significant” or “sufficient.” Survey evidence: importance and perils.

14. Distinctiveness Philip Morris v. Imperial Tobacco: Issue is the distinctiveness of a Canadian mark in the context of an action to invalidate a registered mark. Significance of the duty-free sales in Canada. Potential for loss of distinctiveness if mark is not policed.

15. Distinctiveness Astrazeneca v. Novopharm: Application to register the colour and shape of a tablet as a trademark. Is it distinctive of the manufacturer? Significance of other tablets in the marketplace with the same appearance for (a) all medicines, or (b) all medicines for the same condition. Significance of other identifying indicia on the product, e.g. the brand name, the DIN number. Subtext: control of the appearance of generic copies of a proprietary medicine when the patent expires.

16. Acquired Distinctiveness • Section 12(2): A trademark that is not registrable by reason of s. 12(1)(a) or (b) is registrable if it has been so used in Canada by the applicant or his predecessor-in-title as to have become distinctive at the date of filing an application for its registration.

17. Acquired Distinctiveness • Section 12(2) applies to marks that are: • 1. Names. s. 12(1)(a) • 2. Descriptive or deceptively misdescriptive of character or quality. s. 12(1)(b) • 3. Geographically descriptive. s. 12(1)(b)

18. Acquired distinctiveness Recognizes fact that descriptive marks and names can acquire a secondary meaning as a trademark, e.g. CARTIER, EVEREADY, MCDONALDS. • Mark is registrable if it has secondary meaning as of filing date. • Must prove mark is recognized by a substantial portion of Canadian public as distinguishing the source of the goods/services. Molson v. John Labatt.

19. Distinguishing Purpose • Where a mark is used for a purpose other than to distinguish the goods or services of the user, e.g. to inform users that the product can be used with some other product identified by the trademark, the mark is not being used as a trademark. Bombardier v. British Petroleum.

20. Use under Section 4 • What is “use”? • Section 2 defines “use” in relation to a trademark as: • “any use that by section 4 is deemed to be a use in association with wares or services”

21. Use under Section 4 • Section 4 provides: (1) A trademark is deemed to be used in association with wares, if at the time of the transfer of the property in or possession of such wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred.

22. Use under Section 4 (2) A trademark is deemed to be used in association with services if it is used or displayed in the performance or advertising of such services. (3) A trademark that is marked in Canada on wares or on the packages in which they are contained is, when such wares are exported from Canada, deemed to be used in association with such wares.

23. Use under Section 4 • Use with wares – Section 4(1) • Mark must be associated with the wares at the time of transfer of wares to buyer, in the normal course of trade • Nissan Canada Inc. v. BMW Canada Inc.

24. Use under Section 4 • “…or it is in any other manner so associated with the wares…” • BMB Compuscience v. Bramalea (software)

25. Use under Section 4 • “…in the normal course of trade…” • Siscoe Vermiculite (samples) • Grants of St. James (test marketing) • Saft-Societe (single sale)

26. Use under Section 4 • Use by export – Section 4(3) • Use on exported goods is deemed to be use in Canada.

27. Use under Section 4 • Use with services – Section 4(2) • Use or display in the performance or advertising of services is deemed to be use. • Is the advertising of services in Canada, where the services themselves are provided only outside of Canada, a use under section 4? • Porter v. Don the Beachcomber • Saks v. Registrar

28. Entitlement – Section 16 • Material dates for determining entitlement to register a trademark as between competing parties: • Section 16(1) – Application based on use or making known: date of first use or making known. • Section 16(2) – Application based on use and registration abroad: date of filing or priority. • Section 16(3) - Application based on proposed use: date of filing or priority.

29. Entitlement – Section 16 • Effigi Inc. v. Attorney General Issue of determining entitlement to register under Section 37 in the context of two co-pending applications to register where one or both claim prior use. T files after E, but claims use of the mark since prior to E’s filing date. Held by FCA: T’s application is refused because T is not the person entitled under s. 37. Entitlement under s. 37 is not the same as entitlement under s. 16. It is based on application filing order, without regard to claims in an application to prior use. The alleged prior use can be made the subject of evidence in an opposition to the earlier-filed application.

30. Registering a trademark Some advantages of a trademark registration: (1) National protection. (2) Prevent “depreciation of goodwill” – section 22. (3) Limited incontestability – section 17. (4) Foreign applications. (5) Convention priority claim – section 34. (6) Deters others from adopting a confusing trademark. (7) Easier to enforce. (8) Can be a defence.

31. Registering a trademark • Trademark application procedure involves: • conducting a search (optional) • filing trademark application. • Section 16 - grounds for filing application: (a) mark used in Canada – s. 16(1). (b) mark “made known” in Canada – s. 16(1) and s. 5. (c) mark registered and used abroad – s. 16(2). (d) intent to use trademark – s. 16(3).

32. Registering a trademark • examination • Examiners’ duties: (a) search trademarks register for confusing marks. (b) ensure application adheres to provisions of s.12. (c) check formalities - s.30. • publication

33. Registering a trademark • opposition • S.38(2) - grounds for opposition: (a) non-compliance with s.30. (b) non-compliance with s.12. (c) applicant is not the person entitled to registration - s. 16. (d) not distinctive - s.2. • allowance. • payment of registration fee. • filing of declaration of use. • registration of mark; renewable every 15 years.

34. Registrable Marks • Not all marks are registrable. • Section 12(1) sets out the categories of marks that are not registrable: (a) Personal names. (b) Clearly descriptive or deceptively misdescriptive marks. (c) Name in any language of the wares/services. (d) Confusing with a registered trademark. (e) Marks prohibited by s.9 or 10. (f) Denominations prohibited by s.10.1. (g) Geographical indication with respect to wine. (h) Geographical indication with respect to spirits. (i) Olympic & Paralympic Marks

35. Personal Names • S.12(1)(a): • A trademark cannot be a word that is primarily merely the name or surname of an individual who is living or has died within the preceding 30 years. • “Name” is a word or combination of words by which a person is regularly known. It is the full name. A given name is not a “name.” • “Surname” is the family name. • “Name” can be something other than formal, legal names.

36. Personal Names • Two-part test: 1. Determine whether the trademark is in fact the name of a living person or someone who died within past 30 years. If not, mark is not contrary to section 12(1)(a). 2. If mark is a name/surname of an individual, is it “primarily merely” a name/surname?

37. Personal Names • A coined trademark that is also an uncommon name may not be “primarily merely a name.” Standard Oil v. Registrar (FIOR)

38. Personal Names COLES • Registrar of Trademarks v. Coles Book Stores • Coles is a surname. • Dictionary meaning is “cabbage” but rarely used. • COLES is not merely a surname but it is primarily merely a surname, therefore not registrable.

39. Personal Names ELDER’S • Elder’s Beverages v. Registrar of Trademarks • Applicant applied for trademark ELDER’S for non-alcoholic beverages. • Elder is a surname but also a dictionary word with several different meanings. Dictionary meanings of the word were significant. • Held, not merely a surname and not primarily merely a surname. • Possessive case and plural of names are not exempt from s.12(1)(a).

40. Descriptive Marks • S.12(1)(b): • trademark cannot be a word that is “...whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or the conditions of or the persons employed in their production or of their place of origin”.

41. Policy reasons for S. 12(1)(b) • Prevent appropriation by one trader of descriptive words that should be available for all competitors to use. General Motors v. Bellows • For deceptively misdescriptive trademarks, protect consumers from deception.

42. “Clearly” Descriptive • “Clearly” means “easy to understand, self-evident or plain.” Drackett v. American Home Products • Helps to distinguish between suggestive marks and descriptive ones. • Examples of suggestive marks: • TAVERN for alcoholic brewed beverages • WATERWOOL for bathing suits

43. Descriptive of Quality • EXTRA • PREMIUM • PERFECTION • SUPER • SUPREME • RIGHT (Imperial Tobacco v. Benson & Hedges)

44. Deceptively Misdescriptive • SHAMMI for transparent polyethylene gloves. Deputy Attorney-General v. Biggs Laboratories

45. Descriptiveness and Corrupted Spellings Corrupted spellings are caught by the “…or sounded…” part of the test in S. 12(1)(b). • KOLD for ice cream • CHEEZ for cheese • STA-ZON and SHUR-ON for eyeglass frames

46. The Test of Descriptiveness • Based on immediate first impression. • Applies to an intrinsic characteristic or quality. (Provenzano v. Registrar: KOOL ONE for beer) • Includes description of function, purpose or effect. (Thomson Research v. Registrar ULTRA FRESH for bacteriostats) • Applies to the beneficiary of the services (Ontario Teachers Pension Plan: TEACHERS’ for a pension plan for teachers)

47. Geographically Misdescriptive • BRIGHT’S FRENCH HOUSE for French wines or wines blended with French wines (T.G.Bright v. Institute National)

48. Geographically Descriptive Two kinds of geographical place names can be held descriptive: • 1. Place having reputation as a source of the goods • 2. Place recognized as a likely source for a wide variety of goods. Atlantic Promotions. But see Vina Leyda.

49. Name of the Goods or Services • Section 12(1)(c) applies to the name in any language. • Marks that are clearly descriptive in languages other than English or French are not barred.

50. Confusing Trademarks • Section 6: The use of a trademark causes confusion with another trademark if the use of both trademarks in the same area is likely to lead to the inference that the wares/services associated with the trademarks are made/performed by the same person.